Phonetic Similarity and Likelihood of Confusion

Fact: Trademark Infringement Case: Alkem Laboratories Ltd. Vs. Alchem International Pvt. Ltd

The plaintiff, Alkem Laboratories Ltd., is a pharmaceutical company incorporated in 1973, engaged in the development, manufacture, and sale of pharmaceutical and nutraceutical products. The plaintiff owns the registered trademark “ALKEM” and has been using it continuously since 1973.

The defendant, Alchem International Pvt. Ltd., incorporated in 1982, provides plant-derived active ingredients and Ayurvedic extracts, selling products under the mark “ALCHEM”. The defendant has been using this mark since 1985, primarily in export markets until it started retailing in India in 2006.

The plaintiff sent a cease-and-desist notice in 2005 after discovering the defendant’s expanded use of the mark, leading to the filing of the present suit in 2018 for trademark infringement, passing off, and related reliefs.

Procedural Details

• The suit seeks a permanent injunction restraining the defendant from infringing the plaintiff’s trademark “ALKEM”.
• The plaintiff filed interim injunction applications starting in 2018 to maintain status quo on the defendant’s use and advertising of the mark “ALCHEM”.
• The defendant filed an application to vacate the interim order.
• The parties were referred to unsuccessful mediation in 2022.
• Judgment was reserved on July 11, 2025 and pronounced on October 10, 2025.

Dispute

The core dispute revolves around the alleged trademark infringement and passing off by the defendant through its use of the mark “ALCHEM,” which the plaintiff claims is phonetically and visually similar to the registered mark “ALKEM.”

The plaintiff contends that the defendant’s use causes confusion among consumers, infringing their rights. The defendant denies infringement, asserting:

• Concurrent use of its mark since 1985.
• Bona fide adoption derived from “Alkaloids” and “Chemicals”.
• Non-overlapping product lines initially limited to bulk drugs and exports.
• Acquiescence and laches due to plaintiff’s delay in filing the suit.

Detailed Reasoning

Similarity of Marks

The Court observed that the marks “ALKEM” and “ALCHEM” are phonetically identical and visually similar to a deceptive extent. The plaintiff, having adopted and registered “ALKEM” since 1973, is the prior user and proprietor, whereas the defendant adopted “ALCHEM” in 1982 and began retail sales in India only after 2006. The defendant’s trademark registrations remain ungranted in India.

Acquiescence and Delay

The Court referred to settled principles from precedent cases, noting that mere silence or delay by the plaintiff does not amount to acquiescence unless there is positive encouragement of the defendant’s use.

• The plaintiff issued cease-and-desist notices and filed oppositions against the defendant’s applications.
• This negated any claim of acquiescence.
• The Court held that delay and laches cannot bar injunctions, especially where public interest and likelihood of confusion exist.

Honest Concurrent User

The defendant’s claim of honest concurrent user status was rejected. The Court noted:

• The defendant knew of the plaintiff’s prior use and registration.
• The expansion into retail overlapping with the plaintiff’s range post-2005 demonstrated intent to capitalize on the plaintiff’s goodwill.

Product Similarity and Likelihood of Confusion

The Court found that both parties dealt in overlapping pharmaceutical and nutraceutical products distributed through similar trade channels. Consumer confusion was likely, especially among:

• Average consumers
• Medical practitioners
• Pharmacists

Use of the Mark

The defense that “ALCHEM” was used only as a source identifier was contradicted by evidence showing:

• Extensive advertising
• Prominent display on packaging
• Standalone use of the mark

Hence, the defendant’s use was likely to cause confusion, violating Sections 29(5) and 29(6) of the Trade Marks Act, 1999.

Balance of Convenience and Irreparable Harm

The Court held that allowing continued use by the defendant would cause irreparable harm and confusion to both the plaintiff and the public.

Decision

The Court granted an interim injunction restraining the defendant, its associates, and agents from using the mark “ALCHEM” or any deceptively similar mark in relation to pharmaceutical or medicinal products in India, except in respect of manufacturing and sale of Active Pharmaceutical Ingredients (APIs), where the plaintiff consented to such use.

Disclaimer

The information shared here is intended to serve the public interest by offering insights and perspectives. Readers are advised to exercise discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By

Advocate Ajay Amitabh Suman, IP Adjutor (Patent and Trademark Attorney), High Court of Delhi